Israel Patent Office Report 2015

The Israel Patent Office has just published its report of 2015. Following the origami theme, and in an escalation from paper darts through hot air balloons, this time the cover shows an origami rocket. However, instead of plumes of gases, the rocket leaves a wake of bubbles. Go figure.

In 2015, 6,904 new applications were filed with the Israel Patent Office. This is the highest number since 2010, but still significantly less than 2006-2008. Noticeable increases in filing have occurred in chemistry, life sciences and computing related inventions. This reflects worldwide trends, as discussed by the EPO in their 2015 report.

The number of priority applications first filed in Israel was 830, which is up from 835 in 2014. It is still lower than any other year in the past decade. The number of non-priority applications, including Paris and PCT national phase filings, was 6074. This follows the over all new filing trends, and is more than any other year from 2011 to 2015, but less than 2006 to 2010.

Only 9.2% of Applicants for patents in Israel were Israelis. Indeed, the percentage of Israeli applicants has been steadily declining over the past decade, from 14.5% in 2006. The reduced filing fees for first time filers, which is similar to the US provisional filing fees using an agent, seems to have done nothing to encourage Israelis to first file in Israel, although I think there are significant advantages in so-doing, compared to going the US provisional route. Oddly however, there has been a steady rise in the percentage of Israel originating applications that are being allowed, when looking at the over-all allowance rate. Indeed, some 17.4 % of all patents allowed were filed by Israeli applicants. The logical conclusion is that Israeli Applicants have an easier examination than their foreign counterparts. I doubt that this is the case. What may be happening is that Israeli Applicants are having interviews with Examiners and negotiating something allowable.

Applications are examined between two and three years from filing date, on average 30.4 months from filing (for PCT applications, this is from the PCT filing date, not national phase entry date). On average, cases take a further 29 months to allowance.

Who is filing into Israel?

Of the PCT national phase entries, 2911 originated with the USPTO as receiving office, 1203 with the EPO as receiving office, 454 with the International Bureau, 414 were national phase entries of PCTs filed with the Israel Patent Office as the receiving office. 194 cases came from Japan, 612 from China and 38 from Korea. Without the country of origin of the cases filed with the International Bureau being known and with a massive 626 originated ‘elsewhere’, it is not clear what this data really means. I suspect that a significant number of cases have come from the Swiss, DE and UK patent offices, but could be wrong.

Israeli Universities

Surprisingly, Ben Gurion University with 23 applications filed in 2015, has overtaken Yeda (Weizmann), Technion and Yissum (Hebrew University) as the most prolific University Tech Transfer filing in Israel. All the universities are down in Israeli filings compared to 2014 figures, except for the Haifa Technion. However, when PCT applications are considered, the number of cases filed last year is much higher, and is led by Yissum, Yeda, Technion, Ben Gurion and Tel Aviv in that order. What we suspect is happening is that Ben Gurion is first filing in Israel, whereas the other universities are first filing US provisional applications.

The Israel Patent Office has offered a 40% discount to Israeli universities but this doesn’t seem to have impacted their filing strategy. We are not surprised by this since the savings are marginal when considering the cost of drafting.

Facebook Inc. Is the largest foreign filer into Israel, with a massive 136 applications in 2015. The next 14 companies are mostly pharmaceutical developers.

Divisionals

Chemistry, Pharma and Biotech applications are most likely to spin off divisional applications. This is not surprising, since the Specifications tend to be longer and less focused than mechanical, physics, medical device and computer type applications.

Applications that don’t get allowed

A significant number of Applications filed in Israel simply lapse. In 2015, 3,730 cases lapsed, 24 were rejected and 130 were expressly abandoned by the Applicant.

Section 17c allowances dropping

Only 14.5% of patents that issued were allowed under Section 17c of the Law. The number of 17c based allowances has been dropping steadily since 2010. In my experience, the Israeli Examiners are more likely to reject 17c requests based on their understanding of the art.

Fast tracking

Usage of the Patent Prosecution Highway (PPH) has increased, with some 390 cases being fast-tracked under the PPH (up from 96 in 2014) and a further 160 cases being made special for other reasons (age of applicant, suspected or actual infringement, etc.). So far, neither route has resulted in a significant number of cases being allowed.

Since the Green channel was established in 2010 for nothing to declareenvironmentally friendly patent applications, 133 cases have been fast-tracked. In 2015, some 13 cases qualified and a whopping 3 patents issued.

Going full term

Hardly surprising, Chemistry related patents are the most likely to be renewed full term.

PCT Applications

Israelis filed 1329 PCT Applications with the IPO as receiving office and a further 128 applications filed by Israelis directly with the International Bureau selected the IPO as the International Search Authority. Interestingly, some 195 Applications filed with the USPTO as receiving office specified the IPO as the International Search Authority. In total, the Israel Patent Office issued some 1085 International Search Reports. Israelis can choose to elect the USPTO, the EPO or the IPO as the International Search Authority. 819 out of 1329 (61.6%) chose the IPO which is marginally cheaper than the USPTO which handled 193 cases for Israeli Applicants, but significantly cheaper than the EPO which handled 317 cases. It seems that the EPO is still considered the ‘gold standard’. EPO examiners are fluent in three languages as a requirement for their job. (I suspect from their names, that there are a very large number of US examiners who also speak a foreign language, often Vietnamese or Korean, but USPTO searches are usually very US focused).

TRADEMARKS

The number of trademarks filed into Israel has stayed more or less constant since 2011.There has, however, been a significant rise of 23% in the number of International Applications filed with the Israel Patent Office (Trademark Division). The numbers are a little distorted since until 2010, only single class applications were accepted. Now multiple class applications are allowed. If one considers new applications multiplied by the number of classes, in 2015, some 20,525 new cases were filed which is almost double the number of cases in 2005.

Some 24% of trademark applications filed in Israel are filed by Israeli companies. An almost identical percentage (23.7% were filed by US corporations. 6.7% were from Germany, 6.1% from Switzerland, 5% from France, 4.3% from China, 3.9% from UK applicants, 3/5% from Italy, 2.2% from Japan and 1.7% from Turkey. The remaining 18.8% came from other places. Since 2010, the proportion of Applications filed in Israel by foreign entities has crept up from 70% to 76%.

On average, applications take nearly a year and a quarter for examination to commence, but then things move quickly and typically applications are then allowed within 3 1/2 months. Unlike patent applications where acceleration is discretionary and requires due cause, trademark applications may be accelerated merely by paying a fee. 438 cases were fast tracked in this manner.

By the end of 2015, there were 144,490 registered trademarks in effect, or 184,840 cases if multiple class marks are considered as separate cases.

Under the Madrid Protocol, and lumping Europe together as marks designating the EUIPO, Israel is the 18th most popular destination trailing Vietnam and Kazakhstan but ahead of Belarus and the Philippines.

DESIGNS

During 2015, the Israel Patent Office Design Department underwent major efficiency improvements. The backlog from filing to examination was reduced to 5 1/2 months and during 2016, is expected to be reduced still further, to only three months. The Examiners have begun listing all required amendments in each office action, so there are typically fewer iterations and applications are typically allowed within a year of filing. This is considered highly desirable as designs typically have an ever shorter commercial life as product lifespans decreases. Published designs are now searchable on-line, making redundant trips to the Israel Patent Office merely to inspect the records. The full design registrations may be downloaded at the press of a button. There is a brand new Design Law making its way through the Knesset, which should replace the current 1924 Design Ordinance. During 2016, on-line registration and prosecution should be possible.

in 2016, a total of 1532 design applications were filed. This is about average for the last decade with a high of 1775 applications filed in 2008 and a low of 1351 in 2013. A total of 1,744 applications were allowed, which is the highest number ever.

14.4% of design applications (221 in total) were for building elements in class 25. 11.7% (180) were for containers. 10.6% (163) were for clothing; 8/1% (125) were for furniture, and 6.8% (105) for other household goods. 72% of Applications were for Israeli designs; 9% for designs originating in the US, and 4.5% for designs from Brazil. This anomaly is due to Grendene – a shoe manufacturer, and Stern a jewelers. 3% of designs come from Switzerland and from Holland, and 2% each from Italy, Luxembourg, France and the UK.

The new and somewhat Draconian three-month to respond to an office action regulation coupled with the requirement for examination to be completed within 12 months, has resulted in 1,178 applications being rejected.

It seems that most designs are renewed for a second five-year period, but few are kept in force for the maximum 15 years.

The major applicants is Klil, a manufacturer of aluminium profiles for window frames and the like, with 81 applications This is followed by Naot, a shoemakers, with 64 applications. Monkey Business Design Israel LTD and Ototo Design LTD have 34 and 18 applications respectively. Other local users of the design registration system include another aluminium profile manufacturer, a further couple of design houses, another shoe manufacturer, Karshi, a manufacturer of mass-produced Judaica and Hassidic figurines, and Keter Plastics.

Overall, Israel ranks 15th for PCT applications and 30th for both trademarks and designs applications. Considering the relatively small population, this is quite significant.

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